IN RE STEPHEN W. COMISKEY 499 F.3d 1365 (Fed. Cir. 2007) Lexis: ((lex:2007 U.S. App. LEXIS 22414)) unpatentable mental process under Section 101 Cases of Interest >  IP >  Patent >  Patentable Subject Matter


FROM: Nicole DeBone
DATE: December 14, 2007
RE: In Re Stephen W. Comiskey, 499 F.3d 1365 (Fed Cir. 2007)
2007 U.S. App. LEXIS 22414

FACTS: Comiskey filed a patent application claiming a method and system for mandatory arbitration involving legal documents, such as wills or contracts. Comiskey claimed a “program . . . requiring resolution by binding arbitration of any challenge or complaint concerning any unilateral document . . . or contractual document.”

PROCEDURAL HISTORY: The examiner rejected some claims of the patent application as obvious in light of light of the prior art and therefore unpatentable under Section 103. The Board of Patent Appeals affirmed.

HOLDING: The Federal Circuit held that some of the claims were unpatentable subject matter under Section 101 because mental processes cannot be patented. The court remanded to determined if the claims that were patentable subject matter were obvious.

LIKELY FUTURE IMPORTANCE OR UNANSWERED Q: This decision reaffirmed that business methods may be patentable if they satisfy the Section 101 requirements. If the method is only an abstract idea, the method is not patentable. However, if the method is combined with a machine, the method is patentable subject matter.

The first door a patent application must pass is patentable subject matter under Section 101 before the other patentability requirements are considered. Patentable subject matter under Section 101 has been given extremely broad construction. In Chakrabarty, the Supreme Court stated that “Congress intended statutory subject matter to include anything under the sun that is made by man.” However, the Supreme Court stated that Section 101 patentable subject matter is not without limits. Specifically, the Court has stated that not every process is patentable. Abstract ideas have repeatedly been confirmed as unpatentable. An abstract idea is not patentable because it is a fundamental truth that no one person can claim as an exclusive right. Abstract ideas are also not patentable because abstract concepts without a claimed application are not patentable. An abstract idea with an practical purpose are patentable if it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter. Therefore, patents on a particular system that depend for their operation on human intelligence alone are beyond the reach of patentable subject matter.
Comiskey conceded that his arbitration system did not require a machine. In essence, Comiskey’s independent claims claimed the use of mental processes to resolve a legal dispute. Comiskey’s dependent claims added the following limitation to its corresponding independent claims: “wherein access to the mandatory arbitration is established through the internet, intranet, World Wide Web, software applications, telephone, television, cable, video or radio, magnetic, electronic communication or other communications means.” Because the dependent claim combined the mental process with a machine, the claims satisfy the patentable subject matter requirements. However, the routine addition of modern electronics to an otherwise unpatenable invention typically creates a prima facie case of obviousness. The Federal Circuit noted that the only secondary factor of non-obviousness presented was that a long felt need for the claimed mental process, but not for a combination of the mental process and a machine. The Federal Circuit remanded the obviousness issue.

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